4 Tips for Protecting Your Trademark
Little icons have big implications. Trademarks, those little ™ and ® symbols hanging over the end of a name, are a result of time, effort, and investment in a product, aimed to provide an extra edge over competitors. Trademarks reflect a company's overall identity and reputation—yet businesses around the world lose millions of dollars every year from easily preventable trademark infringements.
By not actively policing trademarks for unauthorized use, companies risk confusing customers and diluting the power of the mark, thereby reducing the potency of pay-per-click-advertisements and dealing a harsh blow to the bottom line.
"The damages could possibly hurt you where if a larger company uses your name for similar goods or services, then you could look like you took the name because you're the smaller company," says Andrea Evans, principal attorney at Andrea Hence Evans, based in Washington, D.C. "Or, regardless of the size—large or small—if the company is using your trademark and it's also for similar products or services but they're not as good a quality, then that can also ruin your reputation."
Protecting your trademark, registered or not, requires sufficient planning and constant vigilance. This guide highlights what to do, and what not to do, to sufficiently defend your mark from erosion or theft.
Protect Your Trademark: Find a Watch Service That Fits Your Business
Let's say you buy a vacation home. You can't oversee the estate at all times, so you probably want someone to watch it occasionally to ensure nobody is squatting on the property. This is exactly what a watch service does for your trademark: It monitors any and all activity related to your mark so you don't have to.
"I think it's essential for any business owner or any trademark owner to have a watch service," says Dennis Prahl, a partner at Ladas & Parry, an intellectual properties firm and watch service provider based in New York. "If you don't take action against these people, then your trademark rights become diminished over time, and you won't be able to expand a license to do things because of the dilution of your brand."
Watch services dig through the various trademark registries to find copycats or anything dubious surrounding your marks; many services will also investigate the violator's websites for both visible and hidden text and tags that may be abusing your mark.
Watch services come in many varieties. "Domain name watchers" identify anybody ripping off your trademark by establishing a domain name and website, and selling competing products on it. Other watch services only inspect the state or national trademark registries; if you're a company with global ambitions, you specifically need to find an international watch service.
"Trademark rights are territorial—they're rights within a country, and they don't expand beyond that," Prahl says. "Once you're registered in the United States, it doesn't mean you're registered in Canada or Mexico; you have to go to separate registers in each country."
Upon finding a suitable service, many lawyers recommend holding search audits at least once a month. The Patent and Trademark Office publishes applications for "opposition," which is a 30-day window for third parties to oppose the registration of another trademark, so by auditing monthly, recently-approved trademarks that might damage your brand can be found and protested in time.
Dig Deeper: How Federal Trademark Registration Works
Protect Your Trademark: Have a Lawyer From the Start
Companies become victims of what's called "trademark bullying" by attacking violators only to learn they're not the senior user of the mark, resulting in a dog fight or counter-suit that could've and should've been easily avoided. To avert such awkward and costly situations, finding a lawyer ahead of time is necessary to fully understand your options.
"If you only go back to the lawyer after you've made a mess of things, it always costs you more," says Theresa Gillis, a partner at Mayer Brown, a legal services organization based in Chicago. "The ol' stitch in time saves nine."
Small, money-conscious companies should not avoid consulting a lawyer because it might be expensive; lawyers educate businesses of their options and provide much-needed guidance throughout every step of the process, saving time and money for the company in the long-run. Lawyers may advise litigation, but they may also tell you that you don't need a lawsuit at all, or that the two companies ought to co-exist peacefully.
"You may end up sending a letter to somebody where you really have no business sending it," Gillis says.
So what type of lawyer do you choose? If you used a lawyer when you first registered the trademark, consult that same lawyer, since he or she is already familiar with your mark. If you need a new lawyer, don't just settle for any intellectual properties lawyer—find a lawyer who specifically deals with trademark rights issues.
"The more experienced they are in trademark enforcement, the easier it's going to be for them to give a quick answer, as opposed to having to go and reinvent the wheel to research the issue," Gillis says.
Dig Deeper: The Apple iPad: A Funny Name, And A Trademark Dispute
Protect Your Trademark: Be Careful Sending Off Letters
Drafting a cease-and-desist letter requires a great amount of care and tact. While most letters typically get infringers to back off peaceably without a lawsuit, cease-and-desists also have a propensity to backfire from time to time. Small businesses should not undertake the letter-writing process alone.
"You may look at something and think it's infringement and immediately send out a cease-and-desist letter because you're trying to cut costs, but it could be the wrong thing to do," Evans says. "You could hurt yourself by putting the wrong information in the cease-and-desist letter, or it may not have even been necessary."
Experts say it's common to not realize that two companies can legally have the same name—they just need to sell different products or services. This simple misconception often leads to unnecessary cease-and-desist letters and costly lawsuits. Gillis recommends hiring a lawyer during the process to make sure what you're writing is appropriate.
"There are different tones to the letter that you may send. If you're a small business and you can't afford the litigation, you don't want to send the letter that's going to prompt them to file suit against you."
Dig Deeper: How To Protect Your Trademark From Infringement
Protect Your Trademark: Conduct Simple Searches
Protecting a trademark is best left to lawyers and professional services, but the least a business can do on its end is to routinely check the search engines—any Bing or Google will do—to confirm no one else is misusing the name.
Google also offers Google Alerts, a free notification system for alerting any time your mark appears on the news or Web. However, Google Alerts should not be used exclusively.
"Google Alerts are probably not going to tell you what's happening on the trademark registers, and not necessarily what's going on with domain names out there," Prahl says.
If and when a red flag appears, rather than jump the gun and immediately contact the infringing business, experts maintain that Google Alerts should only be used to give an idea of the activity surrounding the mark out there.
"Google Alerts is not a law firm," Evans says. "You're trying to cut costs, but you'd still need to seek an attorney so they can interpret the data that you're getting."
Dig Deeper: A Trademark Tale